AquaPure: conflict, enforcement and renewal integrity
You are the only registered trade mark attorney in a three-partner firm. For five years you have acted for AquaPure Ltd, which owns UK registration no. 2567890 for AQUAPURE in Class 11 for water filters, registered 2014 and due for renewal on 30 September 2025. On 2 July 2025 the managing director, Priya, tells you that a former distributor, HydroFlow Ltd, has filed UK application no. 3678901 for AQUAPURE PRO in Class 11 and is selling filters on Amazon. Priya wants you to send a cease-and-desist letter to HydroFlow and Amazon, and to file an opposition by the deadline of 15 August 2025. Your firm's conflict check shows that HydroFlow became a client of the firm's corporate partner last week for a funding round. Priya also asks you to backdate a renewal instruction because she forgot to pay and wants to avoid the late fee. The renewal deadline is 30 September 2025; the six-month late renewal period ends 31 March 2026. HydroFlow's application was published on 15 June 2025.
1. Identify and resolve the conflict of interest and confidentiality issues.
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HydroFlow is a current client of the firm, so the firm cannot act for AquaPure against HydroFlow in the opposition or enforcement without informed consent from both and effective safeguards. Because the matter is contentious and confidential information from HydroFlow could be relevant, consent is unlikely to cure the conflict. The firm must not disclose Priya's information to HydroFlow or HydroFlow's information to Priya. Practical steps: stop work on the opposition and enforcement for AquaPure; tell Priya the firm has a conflict and cannot act in that matter, without revealing why; refer her promptly to independent counsel to preserve the 15 August deadline; the corporate partner may continue acting for HydroFlow only if no confidential AquaPure information is used; screen the files. Document the decision.
2. Advise on enforcement options and the risks of sending cease-and-desist letters.
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AquaPure has a registered UK mark in Class 11; AQUAPURE PRO is highly similar and the goods are identical, so infringement under s.10(2) and passing off are arguable. The opposition against UK application 3678901 must be filed by 15 August 2025; a notice of opposition can be based on the registration. For Amazon, use Brand Registry or a takedown notice rather than a threat of proceedings. A cease-and-desist to HydroFlow can be sent only if there is a genuine basis and the wording is accurate; s.21 groundless threats can make unjustified threats actionable. Avoid threatening retailers or customers who are not primary infringers. Check the former distribution agreement for confidentiality, post-termination restrictions and IP clauses; those may give additional claims. Preserve evidence of sales, listings and confusion. Consider cost: opposition is cheaper than an interim injunction; interim relief requires urgency and strong merits.
3. Advise on the renewal and the client's request to backdate the instruction.
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The renewal date is 30 September 2025. AquaPure can renew now; if missed, there is a six-month late renewal period to 31 March 2026 with an additional fee. The mark is not automatically lost on 30 September, but if not renewed by 31 March 2026 it will be removed. You cannot backdate the renewal instruction or create a false record; that would mislead the UK IPO and is a professional integrity issue. Advise Priya in writing of the actual dates and fees, send a renewal reminder, and ask for written instructions now. If she wants to avoid the late fee, the only lawful route is to pay before 30 September 2025. Keep a file note of the actual instruction date. Do not alter documents.